Designs can be registered for shapes or configurations of articles or patterns or ornamentation applied to articles. Some examples are jewellery design, vacuum cleaners, furniture, toys, footwear, textiles, clothing and the shape of a new car headlight. Design registration is recommended for all important and commercial designs.
It is often said that a design registration protects the way something looks, as opposed to a patent which protects the way that something works.
Design registrations can be much less costly than patent registrations because they are more straightforward.
Registered designs in Australia are valid for up to 10 years, provided renewal fees are paid. Times vary overseas. In New Zealand, for example, a registered design lasts for up to 15 years.
In Australia, designs are automatically registered when lodged, providing there are no formality issues, but a registered design cannot be sued on unless and until it is examined (certified) and a certificate of examination is issued.
A registered design must be new and distinctive for it to survive examination. “New” means it cannot be identical to any prior design. “Distinctive” means that it must not be substantially similar in overall impression to any prior design. Any prior designs anywhere in the world can be used to invalidate a design if it shows the design is either not new or not distinctive.
In Australia, we have the “Statement of Newness and Distinctiveness”, which allows features of the design to be highlighted as particularly new and distinctive at the time the design is filed. Carefully wording this can make the difference between gaining a valid design or getting a design that either cannot be enforced or is invalid.
IP Australia uses a “Statement of Newness and Distinctiveness” that I drafted for design number 366828, as an example of a “good” statement, for others to emulate.
What Are The Benefits Of Registering A Design?
Design registration can be a powerful tool to stop others from using the same or similar design.
Designs are often considered to be the poorer cousin of patents, but the remedies available to a design holder for design infringement are no less powerful.
It is important to seek design protection before using or displaying the design (otherwise you will not be entitled to obtain a valid design registration). There are no grace periods for disclosure prior to filing a registered design.